How the Intellectual Property Act 2014 changes British Patent Law

The most important Part of the Intellectual Property Act 2014 is Part II which contains provisions that amend the Patents Act 1977 and the most important of those amendments is s.17 which will insert a new s.88A into the 1977 Act giving the Secretary of State power to make rules to implement the Agreement on a Unified Patent Court. This Court, a section of which will sit in London, will have jurisdiction over validity and infringement of all European patents. Its formation will enable a unitary patent (that is to say, a European patent for nearly all the member states of the EU) to come into effect. That will result in massive savings for British business in obtaining and enforcing patents for their inventions in Europe.

Also important are provisions that will enable the UK Intellectual Property Office to share information about patent applications with foreign patent offices thereby removing one of the excuses for delay in processing patent applications.

A service by which parties to a dispute over whether a patent is valid or whether it has been infringed can obtain a non-binding opinion from a patent examiner has already been in operation for nearly 10 years and has proved very popular. However, there have been calls to extend the range of matters upon which an opinion can be sought, extending it to supplementary protection certificates (certificates that extend the monopoly for certain classes of inventions) and for the Comptroller to have power to revoke patents that examiners believe to be invalid. The Act gives the Secretary of State power to make regulations that extend the range of topics upon which opinions can be obtained, extends the service to supplementary protection certificates and gives the Comptroller power to revoke invalid patents.

Although not strictly a patent matter, the Act inserts a new section into the Freedom of Information Act 2000 to exempt information about ongoing research from disclosure under a freedom of information request.

Finally the Act tidies up a number of provisions in the 1977 Act which were thought to give rise to uncertainty or ambiguity including one glaring typo.

1
How the Intellectual Property Act 2014
changes British Patent Law
A patent is a monopoly of a new invention. It is
granted as a reward for disclosing the invention to
the public. There is no statutory definition of
“invention” but s.60 (1)
1
of the Patents Act 1977
refers only to products and processes. A patent for
a product is infringed by making, disposing of,
offering to dispose of, using, importing the patented
product or keeping it whether for disposal or
otherwise. A patent for a process is infringed by
using the process or disposing off, offering to
dispose of, importing, using or keeping a product
made from the process. To qualify for a patent an
invention must be new, inventive and useful and fall
outside a number of statutory exclusions. Patents
for the United Kingdom are granted by the
Intellectual Property Office (“IPO”)
2
in Newport or
the European Patent Office (“EPO”)
3
in Munich.
Patents granted by the EPO (“European patents”)
are granted for individual countries and stand
alongside those granted by national patent offices.
There is not yet such a thing as a worldwide patent
or even a patent for the whole EU but there is an
international agreement known as the Patent Co-
operation Treaty (“PCT”)
4
that facilitates patent
applications for more than once country.
The Hargreaves Review
In November 2010 the Prime Minister
commissioned Professor Ian Hargreaves
5
to
consider whether laws designed more than 300
1
“Meaning of infringement
60.-(1) Subject to the provisions of this section, a person
infringes a patent for an invention if, but only if, while the
patent is in force, he does any of the following things in the
United Kingdom in relation to the invention without the
consent of the proprietor of the patent, that is to say -
(a) where the invention is a product, he makes, disposes
of, offers to dispose of, uses or imports the product or
keeps it whether for disposal or otherwise;
(b) where the invention is a process, he uses the process
or he offers it for use in the United Kingdom when he
knows, or it is obvious to a reasonable person in the
circumstances, that its use there without the consent of
the proprietor would be an infringement of the patent;
(c) where the invention is a process, he disposes of, offers
to dispose of, uses or imports any product obtained
directly by means of that process or keeps any such
product whether for disposal or otherwise.”
http://www.ipo.gov.uk/patentsact1977.pdf
2
http://www.ipo.gov.uk/
3
http://www.epo.org/index.html
4
http://www.wipo.int/pct/en/texts/articles/atoc.htm
5
Professor of Digital Economy of Cardiff University
http://www.cardiff.ac.uk/jomec/contactsandpeople/profiles/
hargreaves-ian.html
years ago with the express purpose of creating
economic incentives for innovation by protecting
creators’ rights are today obstructing innovation and
economic growth?
6
Professor Hargreaves replied
that the short answer was “yes”
7
and made 10
recommendations for improving the intellectual
property framework all of which were accepted by
HM Government. They included attaching “the
highest immediate priority to achieving a unified EU
patent court and EU patent system”
8
and taking “a
leading role in promoting international efforts to cut
backlogs and manage the boom in patent
applications by further extending ‘work sharing’ with
patent offices in other countries.” Implementation of
those recommendations alone required primary
legislation.
Intellectual Property Act 2014
On 10 May 2013 Lord Younger introduced the
Intellectual Property Bill
9
into the House of Lords.
With the exception of clause 13 which created a
new offence of intentionally copying a registered or
registered Community design, most of its provisions
were uncontroversial. The Bill received royal assent
on 14 May 2014 with very few amendments. The
Act consists of 24 sections and a schedule. Part I is
concerned with registered and unregistered
designs, Part II with patents, Part III with
miscellaneous matters and Part IV with
commencement and rule making. I have already
discussed the changes to registered and
unregistered design law in How the Intellectual
Property Act 2014 changes British Registered
Design Law
10
and How the Intellectual Property Act
2014 will change British Unregistered Design Right
Law
11
. In addition to facilitating the Unitary Patent
and Unified Patent Court and work sharing with
other patent offices, Part II enables the Secretary of
State to extend the Patent opinions service, makes
a number of changes to the Patents Act 1977 and
amends the Freedom of Information Act 2000 to
exempt certain information on ongoing research
from disclosure requirements under the Act.
Unified Patent Court
It has not yet been possible for all the member
states of the European Union to reach agreement
on an EU patent but on the 19 Dec 2012 all the
member states except Spain and Italy agreed two
regulations
12
that will enable the EPO to grant
6
Foreword of Digital Opportunity - A Review of Intellectual
Property and Growth. May 2011
http://www.ipo.gov.uk/ipreview-finalreport.pdf
7
Ibid
8
Part of recommendation no. 2.
9
http://www.publications.parliament.uk/pa/bills/lbill/2013-
2014/0005/2014005.pdf
10
JD Supra 19 June 2014
http://www.jdsupra.com/legalnews/how-the-intellectual-
property-act-2014-c-94062/
11
JD Supra 11 June 2014
http://www.jdsupra.com/legalnews/how-the-intellectual-
property-act-2014-w-01291/
12
Regulation (EU) No 1257/2012 of the European
Parliament and of the Council of 17 December 2012
Jane Lambert
Barrister
4-5 Gray’s Inn Square
020 7404 5252
jlambert@4-5.co.uk
21 June 2014
2
European patents for the territories of all those
countries as though they were a single state which
will be known as “unitary patents”. On 19 Feb 2013
most of the EU member states that had accepted
those regulations plus Italy agreed
13
to establish a
Unified Patent Court which will have jurisdiction to
determine European patent disputes within their
territories. The Court will consist of a Court of First
Instance in Paris with sections in London and
Munich and a Court of Appeal in Luxembourg. The
Court already has a website
14
and a preparatory
committee has been formed to prepare the way for
the new tribunal.
S.17 of the Intellectual Property Act 2014 inserts the
following new sections into the Patents Act 1977:
“Unified Patent Court
88A Implementation of Agreement on a Unified
Patent Court
(1) The Secretary of State may by order make
provision for giving effect in the United Kingdom to
the provisions of the Agreement on a Unified Patent
Court made in Brussels on 19 February 2013.
(2) An order under this section may, in particular,
make provision—
(a) to confer jurisdiction on a court, remove
jurisdiction from a court or vary the jurisdiction of a
court;
(b) to require the payment of fees.
(3) An order under this section may also make
provision for varying the application of specified
provisions of this Act so that they correspond to
provision made by the Agreement.
(4) An order under this section may—
(a) make provision which applies generally or in
relation only to specified cases;
(b) make different provision for different cases.
(5) An order under this section may amend this Act
or any other enactment.
implementing enhanced cooperation in the area of the
creation of unitary patent protection OJ 31.12.2012 L
361/1 http://eur-
lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2012:3
61:0001:0008:EN:PDF and Council Regulation (EU) No
1260/2012 of 17 December 2012 implementing enhanced
cooperation in the area of the creation of unitary patent
protection with regard to the applicable translation
arrangements OJ 31.12.2012 L 361/89 http://eur-
lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2012:3
61:0089:0092:EN:PDF
13
Agreement on a Unified Patent Court (2013/C 175/01)
OJ 20.6.2013 C 175/1 http://eur-
lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:C:2013:1
75:0001:0040:EN:PDF
14
http://unified-patent-court.org/
(6) An order under this section may not be made
unless a draft of the order has been laid before, and
approved by resolution of, each House of
Parliament.
(7) The meaning of “court” in this section is not
limited by the definition of that expression in section
130(1).
88B Designation as international organisation of
which UK is member
The Unified Patent Court is to be treated for the
purposes of section 1 of the International
Organisations Act 1968 (organisations of which the
United Kingdom is a member) as an organisation to
which that section applies.”
The IPO has already begun consultation on the
legislation to be made pursuant to s.88A (1) and
has inserted a draft statutory instrument into its
Technical Review and Call for Evidence on
Secondary Legislation Implementing the Agreement
on a Unified Patent Court and EU Regulations
Establishing the Unitary Patent
15
. The consultation
on the proposed Order in Council which will change
primary legislation will close on 2 Sep 2014
16
.
Work Sharing with Overseas Patent Offices
With a number of exceptions that are set out in
s.118 (3) of the Patents Act 1977, s.118 (2)
prevents the publication or disclosure of information
or documents relating to a patent application until
after the application is published in accordance with
s.16 of the Act. S.18 (1) of the Intellectual Property
Act 2014
17
would add to those exceptions by
inserting a new paragraph (aa) into s.118 (3). The
subsection will therefore read as follows:
(3) Subsection (2) above shall not prevent the
comptroller from -
(a) sending the European Patent Office information
which it is his duty to send that office in accordance
with any provision of the European Patent
Convention;
(aa) sending any patent office outside the United
Kingdom such information about unpublished
applications for patents as that office requests; or
(b) publishing or communicating to others any
prescribed bibliographic information about an
unpublished application for a patent;
nor shall that subsection prevent the Secretary of
State from inspecting or authorising the inspection
15
https://www.gov.uk/government/uploads/
system/uploads/attachment_data/file/318769/Consultation
_Technical_Review_Unified_Patents_Court.pdf
16
https://www.gov.uk/government/consultations/
secondary-legislation-implementing-the-unified-patent-
court
17
http://www.legislation.gov.uk/ukpga/2014/18/section/
18/enacted
3
of an application for a patent or any connected
documents under section 22(6) above.”
S.18 (2) and (3) of the 2014 Act insert the following
new subsections after s.118 (3) of the Patents Act
1977:
(3A) Information may not be sent to a patent office
in reliance on subsection (3) (aa) otherwise than in
accordance with the working arrangements that the
comptroller has made for that purpose with that
office.
(3B) Those arrangements must include provision for
ensuring that the confidentiality of information of the
kind referred to in subsection (3) (aa) sent by the
comptroller to the patent office in question is
protected.
(3C) The reference in subsection (3) (aa) to a
patent office is to an organisation which carries out,
in relation to patents, functions of the kind carried
out at the Patent Office.”
These provisions will at least remove one of the
excuses for delay in processing patent applications
by British applicants.
Opinions Service
S.13 (1) of the Patents Act 2004 inserted a new
s.74A
18
and a new s.74B
19
into the Patents Act
18
“Opinions by Patent Office
74A Opinions as to validity or infringement
(1) The proprietor of a patent or any other person may
request the comptroller to issue an opinion—
(a) as to whether a particular act constitutes, or (if done)
would constitute, an infringement of the patent;
(b) as to whether, or to what extent, the invention in
question is not patentable because the condition in section
1(1) (a) or (b) above is not satisfied.
(2) Subsection (1) above applies even if the patent has
expired or has been surrendered.
(3) The comptroller shall issue an opinion if requested to
do so under subsection (1) above, but shall not do so—
(a) in such circumstances as may be prescribed, or
(b) if for any reason he considers it inappropriate in all the
circumstances to do so.
(4) An opinion under this section shall not be binding for
any purposes.
(5) An opinion under this section shall be prepared by an
examiner.
(6) In relation to a decision of the comptroller whether to
issue an opinion under this section—
(a) for the purposes of section 101 below, only the person
making the request under subsection (1) above shall be
regarded as a party to a proceeding before the
comptroller; and
(b) no appeal shall lie at the instance of any other person.”
19
“74B Reviews of opinions under section 74A
(1) Rules may make provision for a review before the
comptroller, on an application by the proprietor or an
exclusive licensee of the patent in question, of an opinion
under section 74A above.
(2) The rules may, in particular—
(a) prescribe the circumstances in which, and the period
within which, an application may be made;
1977 which enable anyone to request an
examiner’s opinion as to whether a patent is valid or
whether it has been infringed. The cost of obtaining
such an opinion is £200 which is a fraction of the
costs of an opinion from counsel and in some cases
more accurate since the examiner often has the
benefit of argument and evidence from both sides.
The service has proved to be very popular as can
be seen from the number of requests over the last
decade
20
but it has three limitations:
(1) opinions can only be issued for matters that fall
within the scope of s.74A (1) of the Patents Act
1977;
(2) they cannot be obtained in relation to
supplementary protection certificates; and
(3) the Comptroller-General of Patents, Designs
and Trade Marks has no power to revoke a
patent that an examiner believes to be invalid.
S.16 (1) addresses the first of those limitations by
amending s.74A (1) to enable the Secretary of State
to make regulations to broaden the scope of issues
upon which an opinion can be sought. S.74A (1) will
therefore read as follows:
“74A Opinions on matters prescribed in the
rules
(1) The proprietor of a patent or any other person
may request the comptroller to issue an opinion on
a prescribed matter in relation to the patent”.
The second limitation is met by s.16 (3) of the 2014
Act by inserting the words “sections 74A and 74B
(opinions by the Patent Office)” into paragraph 1 (2)
of Sched. 4A to the Patents Act 1977 which applies
certain provisions of that Act to supplementary
protection certificates.
The last of those limitations is addressed by s.16 (4)
of the Intellectual Act 2014 which inserts the
following new subsections into s.73 of the Patents
Act 1977:
“(1A) Where the comptroller issues an opinion
under section 74A that section 1(1)(a) or (b) is not
satisfied in relation to an invention for which there is
a patent, the comptroller may revoke the patent.
(1B) The power under subsection (1A) may not be
exercised before—
(b) provide that, in prescribed circumstances, proceedings
for a review may not be brought or continued where other
proceedings have been brought;
(c) make provision under which, in prescribed
circumstances, proceedings on a review are to be treated
for prescribed purposes as if they were proceedings under
section 61(1)(c) or (e), 71(1) or 72(1)(a) above;
(d) provide for there to be a right of appeal against a
decision made on a review only in prescribed cases.”
20
http://www.ipo.gov.uk/pro-types/pro-patent/pro-p-
dispute/pro-p-opinion.htm
4
(a) the end of the period in which the proprietor of
the patent may apply under the rules (by virtue of
section 74B) for a review of the opinion, or
(b) if the proprietor applies for a review, the decision
on the review is made (or, if there is an appeal
against that decision, the appeal is determined).
(1C) The comptroller shall not exercise the power
under subsection (1A) without giving the proprietor
of the patent an opportunity to make any
observations and to amend the specification of the
patent without contravening section 76.”
Finally, s.16 (2) repeals s.77B (2) (c) as that rule
making power has never been used and is unlikely
to be used in the future.
Changes to the Patents Act 1977
S.62 (1) of the Patents Act 1977 provides that
neither an inquiry as to damages nor an account of
profits can be ordered against a defendant who
proves that at the date of the infringement he was
not aware, and had no reasonable grounds for
supposing, that the patent existed. The subsection
continues that “a person shall not be taken to have
been so aware or to have had reasonable grounds
for so supposing by reason only of the application to
a product of the word “patent” or “patented”, or any
word or words expressing or implying that a patent
has been obtained for the product, unless the
number of the patent accompanied the word or
words in question.” S.15 (1) of the 2014 Act extends
that exception by inserting the words “or a relevant
internet link” after “the number of the patent.” S.15
(2) adds a new subsection (1A):
“(1A) The reference in subsection (1) to a relevant
internet link is a reference to an address of a
posting on the internet—
(a) which is accessible to the public free of charge,
and
(b) which clearly associates the product with the
number of the patent.”
S.19 and the Schedule to the Intellectual Property
Act 2014 make the following minor amendments to
the Patents Act 1977:
 Para 1 of the Schedule makes the italicized
amendments to s.5
21
that appear in the footnote;
21
Priority date
5.-(1) For the purposes of this Act the priority date of an
invention to which an application for a patent relates and
also of any matter (whether or not the same as the
invention) contained in any such application is, except as
provided by the following provisions of this Act, the date of
filing the application.
(2) If in or in connection with an application for a patent
(the application in suit) a declaration is made, whether by
the applicant or any predecessor in title of his, complying
with the relevant requirements of rules and specifying one
or more earlier relevant applications for the purposes of
this section made by the applicant or a predecessor in title
of his and the application in suit has a date of filing during
the period allowed under subsection (2A)(a) or (b) below,
then -
(a) if an invention to which the application in suit relates is
supported by matter disclosed in the earlier relevant
application or applications, the priority date of that
invention shall instead of being the date of filing the
application in suit be the date of filing the relevant
application in which that matter was disclosed, or, if it was
disclosed in more than one relevant application, the
earliest of them;
(b) the priority date of any matter contained in the
application in suit which was also disclosed in the earlier
relevant application or applications shall be the date of
filing the relevant application in which that matter was
disclosed or, if it was disclosed in more than one relevant
application, the earliest of them.
(2A) The periods are -
(a) the period of twelve months immediately following the
date of filing of the earlier specified relevant application,
or if there is more than one, of the earliest of them; and
(b) where the comptroller has given permission under
subsection (2B) below for a late declaration to be made
under subsection (2) above, the period commencing
immediately after the end of the period allowed under
paragraph (a) above and ending at the end of the
prescribed period.
(2B) The applicant may make a request to the comptroller
for permission to make a late declaration under subsection
(2) above.
(2C) The comptroller shall grant a request made under
subsection (2B) above if, and only if -
(a) the request complies with the relevant requirements of
rules; and
(b) the comptroller is satisfied that the applicant’s failure to
file the application in suit within the period allowed under
subsection (2A)(a) above was unintentional.
(3) Where an invention or other matter contained in the
application in suit was also disclosed in two earlier
relevant applications filed by the same applicant as in the
case of the application in suit or a predecessor in title of
his and the second of those relevant applications was
specified in or in connection with the application in suit, the
second of those relevant applications shall, so far as
concerns that invention or matter, be disregarded unless -
(a) it was filed in or in respect of the same country as the
first; and
(b) not later than the date of filing the second, the first
(whether or not so specified) was unconditionally
withdrawn, or was abandoned or refused, without -
(i) having been made available to the public (whether in
the United Kingdom or elsewhere);
(ii) leaving any rights outstanding; and
(iii) having served to establish a priority date in relation to
another application, wherever made.
(4) The foregoing provisions of this section shall
apply for determining the priority date of an
invention for which a patent has been granted as they
apply for determining the priority date of an invention to
which an application for that patent relates.
(5) In this section “relevant application” means any of the
following applications which has a date of filing, namely -
(a) an application for a patent under this Act;
(aa) an application in or for a country (other than the
United Kingdom) which is a member of the World Trade
Organisation for protection in respect of an invention
which, in accordance with the law of that country or a
treaty or international obligation to which it is a party, is
equivalent to an application for a patent under this Act;
(b) an application in or for a convention country (specified
under section 90 below) for protection in respect of an
invention or an application which, in accordance with the
law of a convention country or a treaty or international
5
 Para 2 inserts a new subsection (4A) into s.20B
and the wording of the section is as set out in
the footnote
22
;
 Para 3 amends s.37
23
, s.72 (2) (b)
24
and s.74 (4)
(b)
25
in accordance with the italicized text in the
convention to which a convention country is a party, is
equivalent to an application for a patent under this Act.
(6) ………..”
22
“Effect of reinstatement under section 20A
20B.-(1) The effect of reinstatement under section 20A of
an application for a patent is as follows.
(2) Anything done under or in relation to the application
during the period between termination and reinstatement
shall be treated as valid.
(3) If the application has been published under section 16
above before its termination anything done during that
period which would have constituted an infringement of
the rights conferred by publication of the application if the
termination had not occurred shall be treated as an
infringement of those rights –
(a) if done at a time when it was possible for the period
referred to in section 20A(1) above to be extended, or
(b) if it was a continuation or repetition of an earlier act
infringing those rights.
(4) If the application has been published under section 16
above before its termination and, after the termination and
before publication of notice of the request for its
reinstatement, a person -
(a) began in good faith to do an act which would have
constituted an infringement of the rights conferred by
publication of the application if the termination had not
taken place, or
(b) made in good faith effective and serious preparations
to do such an act, he has the right to continue to do the
act or, as the case may be, to do the act, notwithstanding
the reinstatement of the application and the grant of the
patent; but this right does not extend to granting a licence
to another person to do the act.
(4A) The right conferred by subsection (4) does not
become exercisable until the end of the period during
which a request may be made under this Act, or under the
rules, for an extension of the period referred to in section
20A(1).
(5) If the act was done, or the preparations were made, in
the course of a business, the person entitled to the right
conferred by subsection (4) above may –
(a) authorise the doing of that act by any partners of his for
the time being in that business, and
(b) assign that right, or transmit it on death (or in the case
of a body corporate on its dissolution), to any person who
acquires that part of the business in the of which the act
was done or the preparations were made.
(6) Where a product is disposed of to another in exercise
of a right conferred by subsection (4) or
(5) above, that other and any person claiming through him
may deal with the product in the same way as if it had
been disposed of by the applicant.
(6A) The above provisions apply in relation to the use of a
patented invention for the services of the Crown as they
apply in relation to infringement of the rights conferred by
publication of the application for a patent (or, as the case
may be, infringement of the patent).
“Patented invention” has the same meaning as in section
55 below.
(7) In this section “termination”, in relation to an
application, means -
(a) the refusal of the application, or
(b) the application being treated as having been refused or
withdrawn.”
23
“Determination of right to patent after grant
37.-(1) After a patent has been granted for an invention
any person having or claiming a proprietary interest in or
under the patent may refer to the comptroller the question-
(a) who is or are the true proprietor or proprietors of the
patent,
(b) whether the patent should have been granted to the
person or persons to whom it was granted, or
(c) whether any right in or under the patent should be
transferred or granted to any other person or persons;
and the comptroller shall determine the question and
make such order as he thinks fit to give effect to the
determination.
(2) Without prejudice to the generality of subsection (1)
above, an order under that subsection may contain
provision -
(a) directing that the person by whom the reference is
made under that subsection shall be included (whether or
not to the exclusion of any other person) among the
persons registered as proprietors of the patent;
(b) directing the registration of a transaction, instrument or
event by virtue of which that person has acquired any right
in or under the patent;
(c) granting any licence or other right in or under the
patent;
(d) directing the proprietor of the patent or any person
having any right in or under the patent to do anything
specified in the order as necessary to carry out the other
provisions of the order.
(3) If any person to whom directions have been given
under subsection (2)(d) above fails to do anything
necessary for carrying out any such directions within 14
days after the date of the order containing the directions,
the comptroller may, on application made to him by any
person in whose favour or on whose reference the order
containing the directions was made, authorise him to do
that thing on behalf of the person to whom the directions
were given.
(4) Where the comptroller finds on a reference under this
section that the patent was granted to a person not
entitled to be granted that patent (whether alone or with
other persons) and on application made under section 72
below makes an order on that ground for the conditional or
unconditional revocation of the patent, the comptroller may
order that the person by whom the application was made
or his successor in title may, subject to section 76 below,
make a new application for a patent -
(a) in the case of unconditional revocation, for the whole of
the matter comprised in the specification of that patent;
and
(b) in the case of conditional revocation, for the matter
which in the opinion of the comptroller should be excluded
from that specification by amendment under section
75 below;
and where such new application is made, it shall be
treated as having been filed on the date of filing the
application for the patent to which the reference relates.
(5) On any such reference no order shall be made under
this section transferring the patent to which the reference
relates on the ground that the patent was granted to a
person not so entitled, and no order shall be made under
subsection (4) above on that ground, if the reference was
made the second anniversary of the date of the grant,
unless it is shown that any person registered as a
proprietor of the patent knew at the time of the grant or, as
the case may be, of the transfer of the patent to him that
he was not entitled to the patent.
(6) An order under this section shall not be so made as to
affect the mutual rights or obligations of trustees or of the
personal representatives of a deceased person, or their
rights or obligations as such.
(7) Where a question is referred to the comptroller
under this section an order shall not be made by
virtue of subsection (2) or under subsection (4) above on
the reference unless notice of the reference is given to all
6
footnotes to facilitate the computation of time in
entitlement proceedings;
 Para 4 substitutes the words “such other person
who has a right of audience” for “such other
counsel” in s.52 (4) and “the other party’s legal
representative” for “counsel for the other party”
in s.58 (2);
 Para 5 adds the letters “EC” to “Directive
2004/28” in the definition of “Directive
2001/82/EC” in s.60 (7); and
 Para 6 adds the following new subsection to
s.77:
“(5A) Where, under the European Patent
Convention, a European patent (UK) is revoked
and subsequently restored (including where it is
revoked by the Board of Appeal and
subsequently restored by the Enlarged Board of
Appeal), any fee that would have been imposed
in relation to the patent after the revocation but
persons registered as proprietor of the patent or as having
a right in or under the patent, except those who are parties
to the reference.
(8) If it appears to the comptroller on a reference under
this section that the question referred to him would more
properly be determined by the court, he may decline to
deal with it and, without prejudice to the court's jurisdiction
to determine any such question and make a declaration,
or any declaratory jurisdiction of the court in Scotland, the
court shall have jurisdiction to do so.
(9) The court shall not in the exercise of any such
declaratory jurisdiction determine a question whether a
patent was granted to a person not entitled to be granted
the patent if the proceedings in which the jurisdiction is
invoked were commenced after the second anniversary of
the date of the grant of the patent, unless it is shown that
any person registered as a proprietor of the patent knew at
the time of the grant or, as the case may be, of the
transfer of the patent to him that he was not entitled to the
patent.”
24
“(2) An application for the revocation of a patent on the
ground mentioned in subsection (1)(b) above -
(a) may only be made by a person found by the court in an
action for a declaration or declarator, or found by the court
or the comptroller on a reference under section 37 above,
to be entitled to be granted that patent or to be granted a
patent for part of the matter comprised in the specification
of the patent sought to be revoked; and
(b) may not be made if that action was commenced or that
reference was made after the second anniversary of the
date of the grant of the patent sought to be revoked,
unless it is shown that any person registered as a
proprietor of the patent knew at the time of the grant or of
the transfer of the patent to him that he was not entitled to
the patent.”
25
“(4) No determination shall be made in any proceedings
mentioned in subsection (1) above on the validity of a
patent which any person puts in issue on the ground
mentioned in section 72(1)(b) above unless -
(a) it has been determined in entitlement proceedings
commenced by that person or in the proceedings in which
the validity of the patent is in issue that the patent should
have been granted to him and not some other person; and
(b) except where it has been so determined in entitlement
proceedings, the proceedings in which the validity of the
patent is in issue are commenced on or before the second
anniversary of the date of the grant of the patent or it is
shown that any person registered as a proprietor of the
patent knew at the time of the grant or of the transfer of
the patent to him that he was not entitled to the patent.”
before the restoration is payable within the
prescribed period following the restoration.”
Freedom of Information Act 2000
There is some evidence that businesses have made
freedom of information requests to obtain sensitive
technical or commercial information about their
competitors. S.20 of the Intellectual Property Act
2014 inserts a new s.22A into the Freedom of
Information Act 2000n which exempts such
information from disclosure:
“22A Research
(1) Information obtained in the course of, or derived
from, a programme of research is exempt
information if—
(a) the programme is continuing with a view to the
publication, by a public authority or any other
person, of a report of the research (whether or not
including a statement of that information), and
(b) disclosure of the information under this Act
before the date of publication would, or would be
likely to, prejudice—
(i) the programme,
(ii) the interests of any individual participating in the
programme,
(iii) the interests of the authority which holds the
information, or
(iv) the interests of the authority mentioned in
paragraph (a) (if it is a different authority from that
which holds the information).
(2) The duty to confirm or deny does not arise in
relation to information which is (or if it were held by
the public authority would be) exempt information
by virtue of subsection (1) if, or to the extent that,
compliance with section 1(1) (a) would, or would be
likely to, prejudice any of the matters mentioned in
subsection (1) (b).”
Consequences for Practitioners
Without a doubt the most important provision of the
Act is the power to make rules implementing the
Agreement on the Unified Patent Court. The
establishment of the Court will enable the unitary
patent to come into being which will result in
massive savings in prosecution, translation and
renewal costs. The Court will also effect
considerable savings in enforcement costs and will
give businesses certainty as to the validity of their
own and their competitors’ patents throughout the
EU. As the Court will have jurisdiction over all
European patents and not just unitary ones it is
likely to draw business from the Patents Court and
other national tribunals. Also, the presence in
London of a non-common law tribunal may well
influence the evolution of civil procedure and the
practice of litigation in the UK.▀

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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